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Traditionally, legal scholars distinguish five types of trademarks. These are generally ranged on a spectrum from strongest to weakest. However, as discussed below, there are several other methods of distinguishing types of trademarks. And, when considering your company’s trademarking strategy, it is valuable to consider the other methods of differentiating trademark types. If you have questions about creating and registering a trademark, call the top-rated Trademark Lawyers at Revision Legal at 231-714-0100 or 855-473-8474.
The five traditional types are as follows:
A fanciful trademark is typically a word mark that involves a made-up word (like GOOGLE or PEPSI). An arbitrary trademark is one that uses a word or concept — like apple — in association with an arbitrary and logically unrelated commercial product — like the manufacture and sale of computers and smartphones. A suggestive trademark is one that suggests what the product does. An example is FLOMAX which is the trademark for a medication used to treat an enlarged prostate and, thus, increase urinary tract functioning. A descriptive trademark is one that describes the product or service being sold. An example might be HAPPY NEW YORK GROCERY STORE.
Although often called a type of “trademark,” a generic trademark is not technically or legally a trademark. This is because the word or phrase does not actually function as a trademark. A trademark must identify a commercial source for a product or service. However, a generic trademark does not do that. It usually just describes a generalized type of product.
At one time in the early part of the 1900s, the word ZIPPER was a trademark. But, the word came to be used so commonly that zipper no longer identified a unique commercial source of a product, but rather came to generally identify a type of fastening device. Thus, zipper became a generic word and stopped functioning as a trademark. Eventually, the company that originally owned the ZIPPER trademark lost its trademark registration.
However, as noted above, there are many ways to categorize trademarks. For example, the “types” discussed above refer to word/phrase marks (and, as noted, a generic trademark is NOT a trademark at all).
But, a trademark can be many different things like words and phrases, but also logos, symbols, designs, and even colors, sounds, and moving images. Thus, one can say that these categories are “types” of trademarks. Indeed, when attempting to register non-word trademarks, there are specific — extra — rules that will apply to the application process. Other than generic trademarks, all of these types and categories can be registered under the federal trademark statute called the Lanham Act.
Further, academically, one can distinguish types of trademarks on the basis of origin, purpose, and use. So, one can distinguish commercial trademarks from collective marks, certification marks, and government-allowed and required marks. Thus, for example, the circle R mark that a business can use if it owns a federally registered trademark — ® — is a mark used in trade, but has a quite different origin, purpose, and legally specified use.
Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
The distinction between fanciful, arbitrary, suggestive, and descriptive marks is not merely academic. It determines whether a mark can be registered on the USPTO’s Principal Register immediately, must be placed on the Supplemental Register pending acquisition of secondary meaning, or cannot be registered at all. The leading case establishing the current framework is Abercrombie and Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), in which Judge Henry Friendly articulated the spectrum that trademark lawyers use to this day.
Fanciful marks — KODAK, EXXON, XEROX — are inherently distinctive because they are invented words with no prior meaning. They immediately signal a single commercial source. Arbitrary marks use real words in unexpected ways: APPLE for computers, AMAZON for an online retailer, BLACKBERRY for smartphones. Both categories are placed on the Principal Register without requiring proof of secondary meaning, and both enjoy the strongest legal protections available under the Lanham Act.
Descriptive marks occupy the weakest protectable position on the spectrum. They describe a feature, ingredient, quality, characteristic, or geographic origin of the goods or services. Such marks cannot be registered on the Principal Register unless the applicant demonstrates that the mark has acquired secondary meaning — that is, that consumers have come to associate the term primarily with a single commercial source. Proof of secondary meaning typically requires evidence of long and exclusive use, advertising expenditures, consumer surveys, and declarations from consumers.
Beyond word marks, the Lanham Act protects a range of non-traditional marks. Color marks can function as trademarks if they have acquired distinctiveness. The Supreme Court confirmed this in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). Sound marks — such as the NBC chimes and the MGM lion’s roar — are also registrable. Trade dress — the overall visual appearance of a product or its packaging — can be protected under 15 U.S.C. section 1125(a), provided it is non-functional and either inherently distinctive or has acquired secondary meaning.
Collective marks are owned by an association or cooperative and used by its members to indicate membership. Certification marks are used to certify that goods or services meet certain standards set by the mark’s owner. USDA ORGANIC, ENERGY STAR, and the Good Housekeeping Seal are well-known examples. The owner of a certification mark does not use the mark itself in commerce but authorizes others to use it upon meeting the certification standards.
The strength of your trademark directly determines how easily you can stop competitors from copying your brand. Businesses that choose fanciful or arbitrary marks from the outset will spend less time and money on trademark enforcement than those that choose descriptive marks and must first establish secondary meaning.
The Trademark Attorneys at Revision Legal work with businesses to develop trademark strategies that balance brand messaging with legal strength. If you are adopting a new brand or evaluating the strength of an existing mark, contact Revision Legal at (855) 473-8474 today.
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